Posts in Guest Contributors

The Supreme Court will hear oral arguments in the Cuozzo Speed Technologies, LLC v. Lee on April 25, 2016, with a decision expected sometime before the end of June… [S]ome of the Federal Circuit judges have shown signs that their position on these questions are not as rigid as previously thought. This is not unprecedented – for example, when the Supreme Court was on the verge of considering the patent fee-shifting statute of 35 U.S.C. § 285 in the Octane Fitness case, Judge Rader was seen criticizing the Federal Circuit’s established test in a concurrence to the Kilopass Tech. Inc. v. Sidense Corp. case. The current Federal Circuit may also be recognizing that the present understanding of PTAB jurisprudence may be soon changing.

This extra attention on Wisconsin, coupled with Paul Ryan being the dream candidate for those who favor an open Republican Convention, provides us with a somewhat manufactured, yet novel and non-obvious opportunity to examine Ryan’s views on patents. Oddly, much like those of candidate Kasich, Ryan’s views have been in favor of fee diversion, which have been identified by former heads of the U.S. Patent & Trademark Office as the single biggest problem that has or will face the Office. Indeed, the mentality that leads Donald Trump to exalt the virtues of eminent domain for the greater good isn’t all that different from the thinking that must be required when Paul Ryan (and Kasich too) decide it is appropriate to siphon off user fees from the USPTO.

ACS challenged the Board’s decision that Shaw was not barred from bringing the second IPR because the petition was filed more than one year after a complaint for infringement was served on Shaw. It argued that the decision of the Board not to apply the one-year bar was a matter of statutory interpretation reviewable by the Federal Circuit, and not a decision whether to institute an IPR. The court disagreed, and held that it had no authority to review the Board’s application of the one-year bar. In dicta, the Court suggested that while voluntary dismissal without prejudice may undo the effect of the lawsuit, it may not undo the effect of service of a complaint, which triggers the one-year time bar. But the issue was not properly before the court.

The Court affirmed that B/E could not challenge the validity of MAG’s patents, because of assignor estoppel. In this case, MAG acquired the patents by assignment from a third party, who in turn acquired the patents from the inventors. After this assignment, one of the inventors went to work for B/E. The district court held that this inventor was as assignor of MAC’s patents and was barred from challenging the validity of the patents under the doctrine of assignor estoppel. Further, B/E was held to be in privity with its current employee (and past inventor/assignor of the patents). The assignor estoppel therefore attached to B/E, which was barred from attacking the validity of the patents.

5G is expected to generate even higher revenues from applications and services due to explosion on mobile application and services because of broadband-like speed, which are crucial for some of the emerging technologies like IoT, Wearables and Virtual/Augmented Reality. Revenues for 5G services will exceed $65 billion by 2025, according to a forecast from Juniper Research… The number of patents and key underlying technologies for 5G mobile networks will evolve significantly within next 5 years. However, early analysis shows that Qualcomm will still be the IP leader but may be not as dominant as in 4G-LTE. The device makers like Apple, Samsung, and Lenovo are also working on 5G IP development in order to minimize IP licensing costs.

Secretary Burwell and Director Collins are facing formidable pressure to reinterpret the Bayh-Dole Act for the compulsory licensing of costly drugs arising from federally supported research. And the pressure just increased another notch. On March 28, Senators Bernie Sanders, Elizabeth Warren, Al Franken, Patrick Leahy, Sheldon Whitehouse and Amy Klobuchar joined the leaders of the House Democratic Task Force on Prescription Drug Pricing urging Burwell and Collins to hold a meeting “to allow the public to engage in a dialogue with the Department of Health and Human Services and NIH in order to better understand its position on the use of march-in rights to address excessive prices.” If NIH joins in pursuing the swamp gas illusion that Bayh-Dole was intended to regulate drug pricing, we’ll quickly learn that it’s a lot easier getting into this morass than getting back out.

The First Action interview (FAI) program affords applicants a no-fee opportunity to speak with examiners early during prosecution, before the examiner has invested the time to prepare a complete Office Action. Yet, a free FAI request is filed in a mere 1 of 625 applications. Our analysis shows that the prosecution benefits of this program continue to be realized and that the program improves both the efficacy (allowance rate) and efficiency (office-action counts and time to issuance) of prosecution. We have seen, both in our professional experiences and through these statistics, such great benefit of this program that we have encouraged the USPTO to take this program one step further and establish a Pre-Search Interview Program that would allow the applicant to explain and potentially demonstrate an invention even prior to the examiner conducting a search.

Twenty-five years ago, the Federal Circuit decided a case that transformed where (and how) patent infringement cases can be litigated.[1] By expanding the scope of where a corporate defendant “resides” for venue purposes, the court in VE Holding Corp. v. Johnson Gas Appliance greatly increased the number of states and courts in which many corporations can be sued for infringement. This decision has contributed to the development of forum-shopping and related litigation issues over the past several years. One company, TC Heartland, LLC, is now urging the Federal Circuit to overturn that precedent and restore more stringent venue restrictions through a writ of mandamus, and dozens of others are joining the debate.

Intuitively, family size and diversity of international filings should be good indicators of value. We hypothesized that like independent claim count, the investment to produce a larger patent family and file international patents would correspond to greater value. However, we found the impact was less significant than even the word count of claim 1 – only a 10% contribution to the overall weighting.

The Young Inventor’s Showcase is nothing short of an amazing academic program in 56 Houston area grade schools. The program teaches grade school kids the entire innovation system from problem identification to the store shelves. The class wraps up with an inventor competition judged by members of the Houston Inventors Association… All of these inventions were disclosed without even a provisional patent application being filed. This isn’t just a concern for the Houston Young Inventors Showcase, but is a problem for all science fairs and similar events. It has always been a bit of a concern because once you disclose an invention it is no longer patentable in many countries, but up until March of 2013 disclosure in the U.S. prior to filing a patent application did not create a patent problem here.

Millions of people, from talk show hosts to world leaders, have engaged in a dialog about and with emoji and what it means to communication. Emoji are becoming an increasingly pervasive communication instrument, increasingly used in advertising, to discuss social issues and advocacy, and to even a bridge communication tool between generations. There are even emoji related patents owned by Apple, Facebook, Google, Microsoft and others. Many commentators have speculated on the future of the emoji with an overwhelming consensus: this trend is here to stay.

The Court held that dealing “physical playing cards” did not constitute patent eligible territory. This constituted a “purely conventional” activity, like the conventional computer implementation that fell short in Alice. The Court found there was no inventive concept sufficient to transform the subject matter into a patent-eligible application of an abstract idea.

Larger companies like Adobe can defend themselves in court, even in Texas, but upstarts and mom-and-pop small businesses do not have the time or resources to defend themselves in a Texas courtroom for prolonged periods of time. Given the rampant and growing abuse, Congress must pass comprehensive patent legislation that includes critical venue reform measures. Without venue reform, patent trolls will continue to bring lawsuits against America’s leading innovators and small businesses in jurisdictions that have no connection to an alleged infringement. The choice of forum should not be outcome determinative. That’s not justice.

Despite being grossly unfair to small inventors, the courts are routinely transferring cases to a venue containing the headquarters of the infringing multinational corporation, as happened in this case. Often cases are moved thousands of miles requiring outside counsel, travel, additional motions and legal work and other costs. Often the new venue is not experienced in patent cases and may take years longer to conclude the litigation. Part of the strategy for defendants is to fight a costly war of attrition against independent inventors and small businesses. Eventually they will be forced to give up. That is why patent reform that impacts venue matters so much, it is about raising costs, tipping the scales of justice and beating innovators into submission using procedural rules.

We found that forward citations (later patents that cite the subject patent) were the most significant factor in identifying patents that were likely to be purchased. In fact, the patents that were sold—or even highlighted by brokers, e.g. the representative patent—in a brokered patent package exhibited an even more extreme number of forward citations than litigated patents.